Wednesday, October 15, 2008

TTAB Invokes Bogus Telescope Analogy, Affirms Mere Descriptiveness Refusal of "WIKINVEST" for Financial Website

Ok, I admit it. I'm still miffed over the TTAB's ruling that the mark THE TTABLOG is not inherently distinctive. The Board blindly applied its "telescoping" theory to find mere descriptiveness, ignoring the fact that the parts of a telescope slide smoothly together, while the words "TTAB" and "blog" do not. I ask again, exactly how do you pronounce TTABLOG? Is there any competitive need for someone else to use THE TTABLOG? Do you not think that consumers immediately recognize THE TTABLOG as a mark just because the "telescoping" doesn't fit? These same arguments apply to the Board's robotic affirmance of the PTO's mere descriptiveness refusal to register WIKINVEST for financial information services. In re Nvest, Inc., Serial No. 77154507 (October 8, 2008) [not precedential].

According to the Board, "Applicant has telescoped the words 'wiki' AND [TTABlog query: why all caps on the AND?] 'invest' to create the single word 'wikinvest.'" [TTABlog query: how do you pronounce that?] The Board then cited the SUPEROPE (for wire rope) and BEEFLAKES (for thinly sliced beef) cases as precedents, because those two "telescoped" marks were found to be merely descriptive.

Do you notice any difference between SUPEROPE or BEEFLAKES, on the one hand, and WIKINVEST and TTABLOG on the other? SUPEROPE and BEEFLAKES comprise two words that slide together nicely. There's no problem with pronunciation of the compound term. Even assuming that the SUPEROPE and BEEFLAKES cases were decided correctly (and I think not), they are distinguishable from the case at hand.

Of course, WIKI (which everyone pronounces as "wickee") and INVEST are descriptive of Applicant's services. But take a look at the PTO's evidence regarding the public's supposed understanding of the term WIKINVEST -- flimsy at best.

I continue to maintain that TTABLOG, and WIKIVEST as well, require some thought and imagination -- cause some slight hesitation -- before a consumer recognizes the meaning of the terms. Or maybe the consumers recognize the meaning while at the same time recognizing the awkward spelling and pronunciation that provides distinctiveness. How are these two marks any less distinctive than SUGAR AND SPICE, the oft-cited example of a distinctive, double entendre mark? Doesn't SUGAR AND SPICE immediately convey information about bakery goods? How much hesitation does a consumer experience when encountering SUGAR AND SPICE for bakery goods? Does the consumer first think he or she is buying a nursery rhyme instead of a pumpkin cupcake?

Why would any third party need to use the term WIKINVEST for a investment wiki? Why would any competitor of mine need to use the term TTABLOG for a blog about the TTAB? Why doesn't the Board give the applicant the benefit of the doubt in these cases, at least when the two words involved do not neatly "telescope" into a single word?

TTABlog comment: THE TTABlog is registered under Section 2(f). My valiant but futile attempts to convince the PTO and then the Board that the mark is inherently distinctive are chronicled here, here, here, and here.

Text Copyright John L. Welch 2008.


Post a Comment

<< Home